Kolin Electronics Co. v. Kolin Philippines Int'l

Kolin Electronics Co., Inc. (KECI) owns Registration No. 4-1993-087497 for the word mark KOLIN covering automatic voltage regulators, converters, rechargers, stereo boosters, power supplies, step-down transformers and PA amplifiers. In the KECI ownership case, final in 2007, KECI was adjudged owner of KOLIN under the Trademark Law as against Taiwan Kolin Co., Ltd. (TKC). Separately, in Taiwan Kolin (G.R. No. 209843, March 25, 2015), the Third Division allowed TKC's stylized KOLIN application for televisions and DVD players, finding the goods unrelated and the marks distinguishable on side-by-side comparison. In 2006, Kolin Philippines International, Inc. (KPII), a TKC affiliate, applied to register a stylized 'kolin' mark for televisions and DVD players under Class 9. KECI opposed. The IPO Bureau of Legal Affairs sustained the opposition, noting consumer e-mails showing actual confusion and finding KPII an instrumentality of TKC; the IPO Director General dismissed KPII's appeal. After Taiwan Kolin was promulgated, the Court of Appeals reversed, holding that res judicata bound it to allow KPII's registration. KECI filed a Rule 45 petition.

1. 1Whether the Taiwan Kolin decision bars, by res judicata, the rejection of KPII's application.
2. 2Whether KPII's 'kolin' mark may be registered under Section 123.1(d) of the IP Code despite KECI's registered KOLIN mark.

Petition granted; KPII's application rejected. Res judicata does not apply: bar by prior judgment fails because the subject matter (KPII's mark versus TKC's mark) and causes of action differ, and conclusiveness of judgment fails because a new application raises new issues of damage to KECI not decided in Taiwan Kolin, which registered only a specific stylized design mark. On registrability under Section 123.1(d), likelihood of confusion is judged by a multifactor test, chiefly resemblance of marks and relatedness of goods. The Court held that only the Dominancy Test is incorporated in the IP Code (Section 155.1) and, citing the legislative deliberations, declared that 'the use of the Holistic Test in determining the resemblance of marks has been abandoned.' Under the Dominancy Test, 'KOLIN' is the prevalent feature of both marks, which are aurally identical; stylization is disregarded because KECI's registration is a word mark. The Court also 'abandons the use of product or service classification as a factor in determining relatedness', since the Nice Classification is administrative and conflicts with the IP Code and Section 6 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases. Applying the Mighty Corporation factors and complementarity, the goods are related. Actual confusion, KECI's normal potential business expansion, buyers' limited familiarity, KOLIN's fanciful character, and KPII's bad faith all supported likelihood of confusion. Registration would also curtail KECI's rights protected by Sections 122 and 236 of the IP Code. The Court reversed the Court of Appeals, reinstated the IPO Director General's decision, and rejected Application No. 4-2006-010021.